Unfair Competition

January 16, 2020

Indiana Trademark Litigation: CityMoms, Incorporated in Delaware, Seek Declaratory Judgment Against theCityMoms Greater Indianapolis LLC

Indianapolis, Indiana – Attorneys for Plaintiff, CityMoms, Inc. (“CityMoms”) incorporated in the State of Delaware, filed suit in the Southern District of Indiana seeking a declaratory judgment that its use of “CityMoms” does not infringe the rights of Defendant, theCityMoms Greater Indianapolis LLC (“theCityMoms”) of Indianapolis, Indiana, or theCityMoms’ Trademark Registration No. 4,588,132 (the “‘132 Registration”) for “theCityMoms”. In the alternative, if there is a likelihood of confusion found between the two parties’ marks, CityMoms is claiming its use of the term predates that of theCityMoms. As such, CityMoms is seeking declaratory judgment of non-infringement, and in the alternative, injunctive relief, judgment including statutory damages, and attorneys’ fees.

According to the complaint, CityMoms conducts business online and offers, among other things, a mobile app and software system “that helps local businesses book unused spots in their kids’ activities programs and family events.” TheCityMoms is alleged to provide “a sisterhood for the modern mom” that offers a support network for moms, events and activities, and an official membership. CityMoms claims that theCityMoms has threatened to take action against it for trademark infringement and unfair competition and has interfered with CityMoms’ ability to sell its app to a third party.

CityMoms’ services are alleged to have begun in 2012 with theCityMoms filing its application for the ‘132 Registration on January 2, 2014. This application was given Serial No. 86156171 (the “‘171 Application”) and was filed for the goods and services of International Class 041, which includes “Educational and entertainment services, namely, providing motivational and educational speakers; Organizing, arranging, and conducting playdates, mom-only evenings, open play times, shopping parties, fitness classes, volunteering and cultural events”. The ‘171 Application was submitted with a statement by Melissa Kondritz and Jeanine Bobenmoyer that “theCityMoms” was used in commerce and related with the company at least as early as March 1, 2013. However, CityMoms claims that the domain name http://thecitymoms.org/ was not registered until March 8, 2013 and therefore could not have existed prior to that date. CityMoms further claims it has found no evidence theCityMoms provided motivational and educational speakers on or before January 2, 2014 as part of its business and therefore, the ‘171 Application was filed with “willfully false material statements that constituted fraud” and should make the ‘132 Registration invalid and unenforceable.

January 15, 2020

Indiana Trademark Litigation: F.F.T., LLC Seeks Damages for Alleged Infringement Involving “Functional Family Therapy℠”

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, F.F.T., LLC (“F.F.T.”) having a principal place of business in Seattle, Washington, filed suit in the Southern District of Indiana alleging that Defendants, Thomas Sexton, Ph.D. (“Sexton”), Functional Family Therapy Associates, Inc. (“Functional Family Therapy”), Astrid Van Dam (“Van Dam”), and FFT Partners, LLC (“FFT Partners” and collectively “Defendants”), infringed its rights in United States Trademark Registration Nos. 4,389,569 for the mark FFT-CW®, 4,435,321 for the mark FFP®, and 5,267,897 for the mark FUNCTIONAL FAMILY THERAPY CHILD WELFARE®. F.F.T. is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.

F.F.T. claims it “is an organization dedicated to training psychotherapists in the ‘Functional Family Therapy’ protocol that its founder, Dr. James F. Alexander (“Dr. Alexander”), developed through decades of research and practical application.” According to the complaint, F.F.T. conducts business in thirty-three states and ten foreign countries. Sexton and Van Dam are individuals, alleged to be residing in Bloomington, Indiana. Functional Family and FFT Partners are a corporation and limited liability company, respectively, each alleged to have a principal place of business in Bloomington, Indiana.

According to the Amended Complaint, Dr. Alexander began studying and developing his family based method of therapy for delinquent adolescents in the 1960s and began referring to his therapy model as “Functional Family Therapy” in 1982 with the publication of his first book. F.F.T. claims this protocol has become very successful and is now referred to simply as “FFT.” Dr. Alexander along with non-party, Richard Harrison (“Harrison”), and Sexton allegedly formed FFT, Inc. in 1998 to train therapists in the Functional Family Therapy protocol. Per the complaint, Harrison left the company four years later and Douglass Kopp (“Kopp”) entered the company as CEO and Managing Member. F.F.T. claims it was formed to pursue the same efforts as FFT, Inc., which was subsequently administratively dissolved.

December 9, 2019

Indiana Trademark Litigation: Dean Potter LLC Sues LG for Unauthorized Use of Video Footage

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Dean Potter LLC (“Potter LLC”), an Indiana limited liability company, filed suit in the Southern District of Indiana alleging that Defendants, LG Electronics USA, Inc. (“LG”), a Delaware corporation, and DOES 1 – 10, infringed its intellectual property rights, including the right of publicity. Potter LLC is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.

According to the Complaint, Potter LLC “is the exclusive owner of the name, likeness, image, right of publicity and endorsement, trademarks, and other intellectual property rights of the late Dean Potter.” Potter LLC claims Mr. Potter was a well-known extreme sports athlete who was featured in National Geographic for his stunts including highlining, BASE jumping, and rock climbing. Mr. Potter was allegedly featured traversing a highline in the short film entitled Moonwalk, that was shot in 2011 and published by 2012. It is alleged that no one else has recreated Mr. Potter’s performance in Moonwalk and that Potter LLC is the owner of Mr. Potter’s right of publicity and common law trademark rights in the film.

Potter LLC alleges Defendants utilized footage from Moonwalk in which Mr. Potter was traversing the highline in its commercial entitled “Listen. Think. Answer.” (the “Commercial”). According to the Complaint, LG is a multi-billion dollar corporation that has previously protected and enforced its intellectual property rights, meaning it is aware of the need to obtain a license for using Mr. Potter’s right of publicity and or likeness or commercial purposes. However, Potter LLC claims it was not approached by Defendants regarding a license for the Commercial and it never authorized Defendants to use Mr. Potter’s likeness. Potter LLC further claims Mr. Potter, during his life, “rejected the corporate, commercial, and competitive worlds that sought to profit from his art without understanding it”.

November 25, 2019

Indiana Trademark Litigation: Three Floyds Brewing LLC of Munster, Indiana Seeks Damages for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Attorneys for Plaintiff, Three Floyds Brewing LLC (“Three Floyds”) of Munster, Indiana filed suit in the Northern District of Indiana alleging that Defendants, Floyd’s Spiked Beverages LLC and Lawrence Trachtenbroit, both of Basking Ridge, New Jersey, infringed its rights in United States Trademark Registration Nos. 3,853,136, 4,759,863, 4,341,332 and 5,781,941 (collectively the “Three Floyds’ Marks”). Plaintiff is seeking actual damages, punitive damages, pre and post judgment interest, and attorneys’ fees..

Three Floyds claims to be one of the top craft brewers in the United States, selling under the trade name and mark “THREE FLOYDS” since 1996. Two of the Three Floyds’ Marks at issue in this case are claimed to be incontestable by Three Floyds pursuant to 15 U.S.C. § 1065. Three Floyds further claims that its marks have become publicly identifiable and that its customers frequently shorten the Three Floyds’ Marks to “‘FLOYDS’ and refer to ‘FLOYDS’ as the source of Three Floyds’ products and services.”

According to the Complaint, Defendants produce and sell alcoholic lemonade and tea beverages under the name “Floyd’s”. Defendants allegedly filed U.S. Trademark Application Serial No. 87922801 (the “First Application”) with the USPTO for a stylized FLOYD’s logo (the “Floyd’s logo”) for “Alcoholic beverages, except beer” on May 15, 2018. Defendants claimed to have used the Floyd’s logo in commerce since at least May 1, 2018. On or about November 5, 2018, it is alleged that Defendants filed U.S. Trademark Application Serial No. 88181124 (the “Second Application”) with the USPTO to register the mark “FLOYD’S” for “Beer-based coolers” and claimed to have used the mark in commerce since at least January 1, 2018.

October 25, 2019

Indiana Patent Litigation: Irvine Shade & Door, Inc. Sued For Alleged Patent Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiffs, Stoett Industries, Inc. (“Stoett”) of Hicksville, Ohio and Newline International, LLC (“Newline”) of Culpeper, Virginia, filed suit in the Northern District of Indiana alleging that Defendant, Irvine Shade & Door, Inc. (“Irvine”) of Elkhart, Indiana, infringed their rights in United States Patent No. 6,470,511 (the “‘511 Patent”) for “SHOWER SCREENS”. Plaintiffs are seeking preliminary and permanent injunction, treble damages, attorneys’ fees, expenses, costs, and other relief the court deems proper.

According to the Complaint, Newline was founded in New Zealand in 1983 and expanded its sales and facilities for shower screens into the United States in 2002. While Newline is the owner of the ‘511 Patent, Stoett claims to be the exclusive distributer for products covered by the ‘511 Patent in the United States via a licensing agreement dated December 2, 2012. Stoett allegedly sells a single shower screen for about $215.00 and has sold over 90,000 shower screens throughout the United states.

Plaintiffs believe Irvine has entered into contracts or has relationships with third-parties to make or sell infringing shower screens which either have or will result in lost sales for Newline and Stoett. As such, Plaintiffs are seeking damages for the alleged infringement of the ‘511 Patent pursuant to 35 U.S.C. § 271. Second, Plaintiffs are alleging Irvine has participated in state deceptive trade practices in violation of Ohio’s deceptive trade practice laws, Ohio Rev. Code § 4165.01, et seq. Finally, Plaintiffs are seeking damages for the alleged unfair competition by Irvine and unjust enrichment.

September 25, 2019

Indiana Trademark Litigation: Fanimation, Inc. Sues New Jersey Based Company for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Fanimation, Inc. of Zionsville, Indiana, filed suit in the Southern District of Indiana alleging that Defendant, Décor Selections, LLC d/b/a Lighting Merchant (“Lighting Merchant”) of Ocean, New Jersey, infringed its rights in United States Trademark Registration No. 2,318,516 for FANIMATION (the “Registered Mark”). Fanimation is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.

Fanimation claims it owns the Registered Mark for “electric wall mounted fans, electric free-standing floor pedestal fans and electric ceiling fans for non-industrial use.” Further, Fanimation alleges it has been using the Registered Mark, FANIMATION, since at least 1984 and because it has filed all proper paperwork and the Registered Mark has been registered more than five years, the Registered Mark is now “incontestable” pursuant to 15 U.S.C. §1065. According to the complaint, Fanimation sells its fans in a variety of ways through direct sales via its website or showrooms, or through Authorized Dealers. Authorized Dealers have entered into a written Authorized Dealer Agreement (“ADA”) to sell Fanimation fans through specially trained staff. Fanimation claims “original buyers” of its fans from direct sales or those through an Authorized Dealer receive a warranty that is redeemable with proof of purchase, purchase order, or invoice number.

Per the complaint, Fanimation claims Lighting Merchant is and has been selling fans bearing the Registered Mark on its website without authorized use via an ADA. Fanimation claims that Lighting Merchant’s lack of warranty and failure to specially train staff on Fanimation’s products make “the fans sold by Lighting Merchant materially different from the genuine FANIMATION® fans offered by Fanimation and its Authorized Dealers.” Fanimation believes consumers are likely to be confused when purchasing fans from Lighting Merchant as to the source and quality of the fans.

Fanimation allegedly sent a cease and desist letter to Lighting Merchant on or about January 19, 2019. Fanimation believes Lighting Merchant purchases fans from Authorized Dealer(s) and then sells them second-hand. These acts, if true, would breach at least one of the terms of the ADA signed by the Authorized Dealer(s) selling to Lighting Merchant. As such, Fanimation is seeking injunctive relief and seeking damages for trademark infringement, false designation of origin, dilution, unfair competition, and unjust enrichment.

September 11, 2019

Evansville Moving Company Seeks Damages for the Use of the “ATLAS” Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiffs, AWGI, LLC and Atlas Van Lines, Inc. (“Atlas”) both of Evansville, Indiana, filed suit in the Southern District of Indiana alleging that Defendant, American Wide Relocation Inc. d/b/a Atlas Moving and Storage (“American”) of North Palm Beach, Florida, infringed their rights in United States Registration Nos. 3,718,117 for the mark “ATLAS”, and 1,591,344 for the mark “ATLAS—THE AGENTS’ VAN LINES” (the “Registered Marks”). Plaintiffs are seeking damages, statutory and treble damages, punitive damages, attorneys’ fees and any other relief the court deems proper.

According to the Complaint, Atlas has provided transportation and storage of goods to the public since at least 1948. Atlas and non-party, Atlas Investment Company, Inc., allegedly assigned all of their rights in the Registered Marks to AWGI on November 9, 2009. Atlas claims it has maintained a license to the Registered Marks since the assignment and that the Registered Marks have developed substantial goodwill as a result of the high quality of services it provides and the extensive amount of promotion it has put forth using the Registered Marks.

AWGI claims it sent a cease and desist letter to American on May 13, 2019 after discovering the alleged infringement of the Registered Marks on American’s website, which American uses to promote its moving and storage services. Richard Falcone, whom Plaintiffs believe is the owner of American, contacted Plaintiffs’ attorney on May 15, 2019 and claimed he could use the term “Atlas” because “it can be found in the dictionary”. Plaintiffs claim American’s services are inferior to their own and that American is employing deceptive practices such as using nearly identical Testimonials on its website as those found on other sites for different moving services. Due to their belief that American’s use of the Registered Marks is likely to cause confusion for consumers, Plaintiffs are seeking damages for trademark infringement under 15 U.S.C. § 1125(a)(1) and common law unfair competition.

August 30, 2019

Indiana-Based Grand Design RV, LLC Accused of Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiff, Trane International, Inc. (“Trane”) of Davidson, North Carolina, filed suit in the Northern District of Indiana alleging that Defendant, Grand Design RV, LLC (“Grand Design”) of Middlebury, Indiana, infringed its rights in United States Trademark Registration No. 5,380,586 (the “‘586 Mark”) for the mark BUILT TO A HIGHER STANDARD. Trane is seeking actual damages, treble damages, attorneys’ fees, and any other relief the Court deems proper.

According to the Complaint, Trane is in the business of designing, building, and selling a variety of products including refrigeration and heating units for vehicles such as trucks and trailers. Trane alleges it has used the ‘586 Mark since at least 1992. Trane further claims that its air conditioners, furnaces, and heat pumps sold under the ‘586 Mark accounted for over $700 million of its sales in 2018.

Trane alleges Grand Design utilizes the ‘586 Mark on its temperature control devices that are used in recreational vehicles. Due to this use, Trane believes Grand Design’s actions will likely confuse consumers and will deceive third parties leading them to think Grand Design’s products are affiliated with Trane. Trane claims it sent two cease and desist letters in the spring of 2018, the second of which finally received a response from Grand Design refusing to cease the use of the ‘586 Mark. Instead, it is alleged Grand Design offered to use the designation “RV’S BUILT TO A HIGHER STANDARD”.

After multiple failed attempts at following up with Grand Design regarding its allegedly infringing use, Trane filed this suit for federal trademark infringement pursuant to 15 U.S.C. § 1114. Trane is further claiming federal unfair competition and trademark infringement under 15 U.S.C. § 1125(a). Finally, Trane is seeking damages for common law unfair competition under the common law of the State of Indiana.

August 29, 2019

Gatorade’s Use of the Term “Sports Fuel” Protected by Fair Use

By Overhauser Law Offices, LLC

Attorneys for Plaintiff-Appellant, SportFuel, Inc. (“SportFuel”), of Chicago, Illinois, originally filed suit against Defendants-Appellees, PepsiCo, Inc. (“Pepsi”) and The Gatorade Company (“Gatorade”) (collectively the “Appellees”), for trademark infringement in the United States District Court for the Northern District of Illinois, Eastern Division. After the District Court granted summary judgment for Gatorade and Pepsi, SportFuel appealed to the United States Court of Appeals for the Seventh Circuit. Circuit Judge Kanne wrote the opinion affirming the grant of summary judgment by the District Court.

SportFuel provides personalized nutrition services to professional and amateur athletes and sells its own brand of dietary supplements. SportFuel registered two trademarks for “SportFuel” the first of which was registered for “food nutrition consultation, nutrition counseling, and providing information about dietary supplements and nutrition.” Pursuant to 15 U.S.C. § 1065, the first registration became “incontestable” in 2013. The second registration for “SportFuel” was for “goods and services related to dietary supplements and sports drinks enhanced with vitamins.”

Gatorade, now a household name, was created in 1965. Although Gatorade is known for its traditional sports drinks, it also sells customizable sports drinks for individual professional athletes and other sports nutrition products. Starting in 2013, Gatorade began describing and marketing its products as “sports fuels” and registered the trademark “Gatorade The Sports Fuel Company” in 2016 with the United States Patent and Trademark Office (“PTO”). During the registration process, “Gatorade disclaimed the exclusive use of ‘The Sports Fuel Company’ after the PTO advised the company that the phrase was merely descriptive of its products.”

August 9, 2019

Indiana Patent Litigation: Indiana-Based Way Interglobal Network, LLC Sued for Alleged Patent and Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiffs, Furrion Property Holding Limited and Furrion Limited, both of Cyberport Road, Hong Kong (collectively “Furrion”), filed suit in the Northern District of Indiana alleging that Defendant, Way Interglobal Network, LLC (“Way Interglobal”) of Elkhart, Indiana, infringed its rights in United States Patent Numbers D839,038 (the “‘038 Patent”), D851,978 (the “‘978 Patent”), D851,979 (the “‘979 Patent”), and D851,990 (the “‘990 Patent”) (collectively the “Furrion Design Patents”). Furrion is seeking preliminary and permanent injunctions, actual damages, total profits, treble damages, and pre and post judgment interest.

According to the complaint, Furrion was formed in 2007 to create modern-luxury technology for traveling including electronics, appliances, and energy sources for land and water vehicles. Furrion claims it has designed and manufactured its cooktops and ovens for use in the “RV” industry since at least 2013. The 2 in 1 Range Ovens produced and sold by Furrion have an allegedly distinctive and unique ornamental design compared to those traditionally available in the RV industry. Furrion claims the Furrion 2 in 1 Range Oven has had great success since May 2017 and is one of its best-selling products.

Furrion Property Holding Limited claims to be the owner by assignment of the Furrion Design Patents with Furrion Limited being the exclusive license holder for the Furrion Design Patents. According to the complaint, Furrion updates an online list of its products that are protected by Furrion’s U.S. patents giving notice of their patent property rights. The marketing and product materials for the Furrion products also allegedly contain copyright and trademark notices. Furrion claims the 2 in 1 Range Oven User Manual, in particular, can be viewed and/or downloaded online from anywhere by anyone. Furrion further claims it has at least four registered United States Trademarks that have been used in connection with its 2 in 1 Range Ovens, which include U.S. Registration Nos. 5,595,145, 5,487,459, 5,595,144, and 4,563,947 (the “Furrion Marks”).